In the intellectual property field, corporate clients and law firms alike are rethinking how best to orchestrate their patent and trademark prosecution and IP portfolio management.

As hard-pressed IP professionals deal with increasing workloads and pressure on resources, there’s a greater realization that in-house IP departments and law firm IP practices cannot handle all the associated tasks involved in today’s IP management as efficiently or as cost effectively as they’d like. There is also a realization that the costs of having outside counsel attorneys handling the total administrative work of managing an IP portfolio cannot be justified.

Already, many corporates and law firms have turned to trusted outsourcing service providers to support them with the high volume and high risk administrative work in areas such as docketing. Now, there’s a growing trend to look at transferring the support work associated with the prosecution of patents and trademarks in similar fashion. Patent filing packages, IDS [Information Disclosure Statement] and reference management, and coordinating and filing trademark Statements of Use all can be effectively handled by an experienced outside team.

For those who are already using the specialized assistance of an outside prosecution support team or those who are looking at moving to this model, there is a need to ensure easy and clear communication between the parties. A major concern in outsourcing is not just the quality and reliability of the service provider but also the transparency of the process – and the ability to track the work each step of the way.

However, with clarity of the process and workflow, IP professionals can successfully weave a trusted outsourcing party into the lifecycle of IP prosecution as if the outside resource were an extension of their own team. An individual in the law firm or corporate IP department reviews and prepares a filing strategy, passes to someone in an outsourced administrative role who prepares a filing package, adds the patent claims drafted by the attorney and sends it back to the lead attorney for review and approval. Then the outsourced resource files and dockets the application. This, like all prosecution, requires the constant transfer of information and requests for input from the various stakeholders and participants involved in the process.

Many organizations use outsourcing as a cost control tool. But, left unmanaged or loosely managed, the process is unlikely to work to optimum effect, with the result that the anticipated efficiencies and cost savings are not fully realized. The operational infrastructure of an outsourcing relationship will dictate the resulting efficiency and cost benefits; and, in developing that infrastructure, there are a lot of questions to consider. For example:

How do you effectively and efficiently collaborate with people who could be thousands of miles away and in completely different time zones?

Who owns what work, what are the agreed-upon roles, and what is the established process?

How do you manage the process and the service provider on a daily basis?

How do you monitor the various strands of work and the stage each is at?

How do you measure the efficiency gains, if any?

How do you ensure client/attorney confidentiality for sensitive information that could or will be accessed by the outsource provider?

How do you make changes to the process quickly and efficiently in line with changing circumstances and/or needs?

In the mechanics of outsourcing, communication and sharing of information is absolutely key. For many IP professionals, sending work to an outsourcing partner is quite an emotional decision – one that requires trust that the information will be handled professionally and appropriately. That’s where the effective use of technology can really strike a chord. The right technology can bring greater transparency to the relationship, improve collaboration by providing a central space to store and view work, and assist in overcoming time zone differences, bringing together an IP team that might be spread across various locations in North America, Europe, India or elsewhere in Asia.

The typical law firm or corporate counsel IT infrastructure is generally unable to provide all this. Therefore, either the necessary solutions need to be put in place prior to the engagement - or offered by the outsourcing vendor.

So what’s needed in an outsourcing relationship from a technology enablement point of view? The key requirement is a single solution, where the corporate client, law firm and the outsourcing service provider can ‘meet’ and collaborate. You need a system that:

Can be accessed by everyone who is part of the client’s IP eco-system, not just the docketing team, administrative staff and attorneys

Has the capacity to be able to store documents, correspondence, notes, etc. electronically with a quick and easy retrieval capability

Drives collaboration and workflow (not just docket reports and task lists), but in a manner that is easy to use and familiar to the IP professional

Integrates the workflow with the document management solution

Provides flexible workflow development and deployment

Offers simple, but granular advanced ‘work in progress’ reporting

Ensures the highest levels of security and strict access controls.

It’s a long ‘wish list’, but one that you should follow and check off against any technology solution you are considering as a means to support and enhance an outsourcing relationship.

Outsourcing without technology enablement is like leaving an orchestra to perform without a conductor. All participants need to know their roles, when they need to play their part …. and that needs to be communicated to all members of the team simultaneously.

The right technology helps ensure that everyone is in tune with each other and that the outsourcing relationship is more harmonious and, ultimately, more successful.

Contributing Author

Jayne Durden

Jayne Durden, Head of Client Solutions Architecture, CPA Global, is a trademark attorney and solicitor. She is experienced in working in large and boutique...